Matthew D. Francis 1 || Nevada Bar No. 6978 BROWNSTEIN HYATT 2 || FARBER SCHRECK, LLP 5520 Kietzke Lane, Suite 110 3 Reno, Nevada 89511 Tel: (775) 324-4100 4 || Fax: (775) 333-8171 5 E-mail: mfrancis@bhfs.com Matthew Satchwell (Pro Hac Vice) 6 || Michael L. Burns (Pro Hac Vice) Peter F. Nelson (Pro Hac Vice) 7 | DLA PIPER LLP (US) 444 West Lake St, Ste 900 8 || Chicago, IL 60606 Tel: (312) 368-2111 9 || Fax: (312) 236-7516 Email: matthew.satchwell @us.dlapiper.com 10 michael.burns @us.dlapiper.com i peter.nelson @dlapiper.com Attorneys for Defendant 12 | Talon Engineering SDN BHD 1B UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA 15 16 | WEARFORCE, PTY LTD., 17 Plaintiff, 18 v. Case No.: 3:21-cv-00284-MMD-CSD 19 || TALON ENGINEERING, SDN BHD, ORDER GRANTING DEFENDANT’S UNOPPOSED 20 Defendant. MOTION FOR ISSUANCE OF LETTERS OF REQUEST TO 21 || TALON ENGINEERING, SDN BHD, EXAMINE PERSONS AND INSPECT DOCUMENTS PURSUANT TO 22 Counterclaimant, HAGUE CONVENTION AND MEMORANDUM OF POINTS AND 23 v. AUTHORIES IN SUPPORT 24 || WEARFORCE, PTY LTD., 25 Counterdefendant. 26 27 28
1 Defendant and counterclaimant Talon Engineering, Sdn Bhd (‘Talon’) respectfully submits 2 || this Motion for Issuance of Letters of Request to Examine Persons and Inspect Documents Pursuant 3 || to Hague Convention (the “Motion’”). See Declaration of Michael Burns (“Burns Decl.”), □□ 2-6, 4 || Exs. 1-5 (copies of the Letters of Request). The Motion should be granted so that Talon may obtain 5 || documents and testimony from Richard Shelton, Scott Vile, Allen Vaughan, Amy Francis 6 || Chapman, and Castech Solutions Pty Ltd, each of whom have information relevant to Talon’s 7 || claims and/or defenses. The Motion is unopposed. Id. § 10, Ex. 9. 8 I. Background 9 On June 24, 2021, Plaintiff Wearforce, Pty Ltd (“Wearforce”) filed the present action 10 || against Talon, alleging infringement of U.S. Reissue Patent No. 47,477 (“RE’477 patent” or 11 || “Asserted Patent’). See D.I. 1, at 1. On November 4, 2021, Talon answered, denying all 12 || allegations of infringement and counterclaiming that the Asserted Patent was unenforceable and : 13 || that Wearforce was liable for intentional interference with prospective economic advantage. See i i 14 || DL 20, at 29-30. 15 In support of its counterclaims and defenses, Talon seeks documents and testimony from 16 || Kathleen Britto, Richard Shelton, Scott Vile, Allen Vaughan, Amy Francis Chapman, and Castech 17 || Solutions Pty Ltd. Burns Decl., §f[ 2-6, Exs. 1-5. Each of these third parties has information 18 || relevant to Talon’s claims and/or defenses. In addition, each of these third parties resides in 19 || Australia and Wearforce has represented that it cannot accept service of any subpoena(s) directed 20 || tothem. /d. 47, Ex. 6, at 1, 3. 21 Castech Solutions Pty Ltd. Castech Solutions Pty Ltd (“Castech’’) is a listed applicant of 22 || the Asserted Patent and the current employer of the named inventor, Allen Vaughan. Id. □ 8, Ex. 23 || 7, at 2, 9]9, Ex. 8, at 1. The Letter of Request to Castech seeks information related to the conception 24 || and reduction to practice of the Asserted Patent, as well as information related to the named inventor 25 || and any prior art to the Asserted Patent. Jd. 3, Ex. 2. 26 Richard Shelton. Wearforce listed Richard Shelton on its Rule 26(a) initial disclosures as 27 || an employee of “Castech Solutions Pty Ltd, who has knowledge of the manufacturing of 28 || Wearforce’s products that practice the Patent-in-Suit.” Jd. §] 8, Ex. 7, at 2. The Letter of Request
1 |) to Richard Shelton seeks information related to the conception and reduction to practice of the 2 || Asserted Patent, as well as information related to the named inventor and any prior art to the 3 || Asserted Patent. Id. 4 4, Ex. 3. 4 Scott Vile. Wearforce listed Scott Vile on its Rule 26(a) initial disclosures as “hav[ing] 5 || knowledge of the preparation, filing, and prosecution of the Patent-in-Suit.” Jd. J 8, Ex. 7, at 2. 6 || The Letter of Request to Scott Vile seeks information related to the conception and reduction to 7 || practice of the Asserted Patent, as well as information related to the named inventor and any prior 8 || art to the Asserted Patent. Jd. 4] 5, Ex. 4. 9 Allen Vaughan. Allen Vaughan is the named inventor of the Asserted Patent. Id. J 8, Ex. 10 || 7, at 2, | 9 Ex. 8, at 1. The Letter of Request to Allen Vaughan seeks information related to the 11 || conception and reduction to practice of the Asserted Patent, as well as information related to the 12 || named inventor and any prior art to the Asserted Patent. Id. 4 6, Ex. 5. 13 Amy Francis Chapman. Talon alleges that Wearforce committed inequitable conduct i 14 || before the USPTO by knowingly listing Danny Stewart as the sole inventor of the Asserted Patent, 15 || despite knowing that Allen Vaughan was the true sole inventor. See D.I. 20, at 29-30. Amy Francis 16 || Chapman filed a declaration as the “legal representative/heir’” of Danny Stewart in which she stated 17 || that Danny Stewart was “the original and first inventor[] of the subject matter which is claimed and 18 || for which a patent is sought.” Jd. The Letter of Request to Amy Francis Chapman seeks 19 || information related to the conception and reduction to practice of the Asserted Patent, as well as 20 || information related to the statements made in her declaration. Burns Decl. 2, Ex. 1. 21 || IL. Legal Standard 22 The proper method for collecting documents and the taking of testimony of persons residing 23 || in Australia is to seek the issuance of a Letter of Request under the Hague Convention of March 24 || 18, 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters, T.1.A.S. 7444, 23 25 || U.S.T. 2555, reprinted in 28 U.S.C. § 1781 (‘Hague Convention”), which is in force between the 26 || United States and Australia. Fed. R. Civ. P. 28(b); see also AUSTRALIAN GOV’T, ATTORNEY- 27 || GENERAL’S DEP’T, Taking evidence in Australia for Foreign Court Proceedings, 28
1 | https://www.ag.gov.au/international-relations/publications/taking-evidence-australia-foreign- 2 || court-proceedings (last visited July 26, 2022). 3 A Letter of Request is what the Hague Convention refers to as a traditional “letter rogatory.” 4 || Crypto Asset Fund, LLC vy. Opskins Grp. Inc., No. 19-cv-06983, 2020 WL 4557059, at *1 (C.D. 5 || Cal. Jan. 14, 2020) (“A deposition may be taken in a foreign country under a letter of request, 6 || sometimes called a ‘letter rogatory’’’). “A letter rogatory is a formal written request sent by a court 7 || to a foreign court asking that the testimony of a witness residing within that foreign court’s 8 || jurisdiction be taken pursuant to the direction of that foreign court and transmitted to the requesting 9 || court for use in a pending action.” Crocs, Inc. v. La Modish Boutique, No. 21-cv-5641, 2021 WL 10 || 5933147, at *2 (C.D. Cal. Nov. 12, 2021). “A letter rogatory can also include requests for the 11 || production of documents.” /d. (citing Asis Internet Servs. v. Optin Glob., Inc., No. 05-cv-05124, 12 || 2007 WL 1880369, at *3 (N.D. Cal. June 29, 2007) and United States v. Reagan, 453 F.2d 165, 43 | 168 (6th Cir, 1971). i i 14 District courts have the inherent authority to issue a letter rogatory. Jd. (citing United States 15 || v. Staples, 256 F.2d 290, 292 (9th Cir. 1958)). The court should not weigh the evidence sought 16 || from the request or predict whether evidence will actually be obtained. 17 | TIL.
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Matthew D. Francis 1 || Nevada Bar No. 6978 BROWNSTEIN HYATT 2 || FARBER SCHRECK, LLP 5520 Kietzke Lane, Suite 110 3 Reno, Nevada 89511 Tel: (775) 324-4100 4 || Fax: (775) 333-8171 5 E-mail: mfrancis@bhfs.com Matthew Satchwell (Pro Hac Vice) 6 || Michael L. Burns (Pro Hac Vice) Peter F. Nelson (Pro Hac Vice) 7 | DLA PIPER LLP (US) 444 West Lake St, Ste 900 8 || Chicago, IL 60606 Tel: (312) 368-2111 9 || Fax: (312) 236-7516 Email: matthew.satchwell @us.dlapiper.com 10 michael.burns @us.dlapiper.com i peter.nelson @dlapiper.com Attorneys for Defendant 12 | Talon Engineering SDN BHD 1B UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA 15 16 | WEARFORCE, PTY LTD., 17 Plaintiff, 18 v. Case No.: 3:21-cv-00284-MMD-CSD 19 || TALON ENGINEERING, SDN BHD, ORDER GRANTING DEFENDANT’S UNOPPOSED 20 Defendant. MOTION FOR ISSUANCE OF LETTERS OF REQUEST TO 21 || TALON ENGINEERING, SDN BHD, EXAMINE PERSONS AND INSPECT DOCUMENTS PURSUANT TO 22 Counterclaimant, HAGUE CONVENTION AND MEMORANDUM OF POINTS AND 23 v. AUTHORIES IN SUPPORT 24 || WEARFORCE, PTY LTD., 25 Counterdefendant. 26 27 28
1 Defendant and counterclaimant Talon Engineering, Sdn Bhd (‘Talon’) respectfully submits 2 || this Motion for Issuance of Letters of Request to Examine Persons and Inspect Documents Pursuant 3 || to Hague Convention (the “Motion’”). See Declaration of Michael Burns (“Burns Decl.”), □□ 2-6, 4 || Exs. 1-5 (copies of the Letters of Request). The Motion should be granted so that Talon may obtain 5 || documents and testimony from Richard Shelton, Scott Vile, Allen Vaughan, Amy Francis 6 || Chapman, and Castech Solutions Pty Ltd, each of whom have information relevant to Talon’s 7 || claims and/or defenses. The Motion is unopposed. Id. § 10, Ex. 9. 8 I. Background 9 On June 24, 2021, Plaintiff Wearforce, Pty Ltd (“Wearforce”) filed the present action 10 || against Talon, alleging infringement of U.S. Reissue Patent No. 47,477 (“RE’477 patent” or 11 || “Asserted Patent’). See D.I. 1, at 1. On November 4, 2021, Talon answered, denying all 12 || allegations of infringement and counterclaiming that the Asserted Patent was unenforceable and : 13 || that Wearforce was liable for intentional interference with prospective economic advantage. See i i 14 || DL 20, at 29-30. 15 In support of its counterclaims and defenses, Talon seeks documents and testimony from 16 || Kathleen Britto, Richard Shelton, Scott Vile, Allen Vaughan, Amy Francis Chapman, and Castech 17 || Solutions Pty Ltd. Burns Decl., §f[ 2-6, Exs. 1-5. Each of these third parties has information 18 || relevant to Talon’s claims and/or defenses. In addition, each of these third parties resides in 19 || Australia and Wearforce has represented that it cannot accept service of any subpoena(s) directed 20 || tothem. /d. 47, Ex. 6, at 1, 3. 21 Castech Solutions Pty Ltd. Castech Solutions Pty Ltd (“Castech’’) is a listed applicant of 22 || the Asserted Patent and the current employer of the named inventor, Allen Vaughan. Id. □ 8, Ex. 23 || 7, at 2, 9]9, Ex. 8, at 1. The Letter of Request to Castech seeks information related to the conception 24 || and reduction to practice of the Asserted Patent, as well as information related to the named inventor 25 || and any prior art to the Asserted Patent. Jd. 3, Ex. 2. 26 Richard Shelton. Wearforce listed Richard Shelton on its Rule 26(a) initial disclosures as 27 || an employee of “Castech Solutions Pty Ltd, who has knowledge of the manufacturing of 28 || Wearforce’s products that practice the Patent-in-Suit.” Jd. §] 8, Ex. 7, at 2. The Letter of Request
1 |) to Richard Shelton seeks information related to the conception and reduction to practice of the 2 || Asserted Patent, as well as information related to the named inventor and any prior art to the 3 || Asserted Patent. Id. 4 4, Ex. 3. 4 Scott Vile. Wearforce listed Scott Vile on its Rule 26(a) initial disclosures as “hav[ing] 5 || knowledge of the preparation, filing, and prosecution of the Patent-in-Suit.” Jd. J 8, Ex. 7, at 2. 6 || The Letter of Request to Scott Vile seeks information related to the conception and reduction to 7 || practice of the Asserted Patent, as well as information related to the named inventor and any prior 8 || art to the Asserted Patent. Jd. 4] 5, Ex. 4. 9 Allen Vaughan. Allen Vaughan is the named inventor of the Asserted Patent. Id. J 8, Ex. 10 || 7, at 2, | 9 Ex. 8, at 1. The Letter of Request to Allen Vaughan seeks information related to the 11 || conception and reduction to practice of the Asserted Patent, as well as information related to the 12 || named inventor and any prior art to the Asserted Patent. Id. 4 6, Ex. 5. 13 Amy Francis Chapman. Talon alleges that Wearforce committed inequitable conduct i 14 || before the USPTO by knowingly listing Danny Stewart as the sole inventor of the Asserted Patent, 15 || despite knowing that Allen Vaughan was the true sole inventor. See D.I. 20, at 29-30. Amy Francis 16 || Chapman filed a declaration as the “legal representative/heir’” of Danny Stewart in which she stated 17 || that Danny Stewart was “the original and first inventor[] of the subject matter which is claimed and 18 || for which a patent is sought.” Jd. The Letter of Request to Amy Francis Chapman seeks 19 || information related to the conception and reduction to practice of the Asserted Patent, as well as 20 || information related to the statements made in her declaration. Burns Decl. 2, Ex. 1. 21 || IL. Legal Standard 22 The proper method for collecting documents and the taking of testimony of persons residing 23 || in Australia is to seek the issuance of a Letter of Request under the Hague Convention of March 24 || 18, 1970 on the Taking of Evidence Abroad in Civil or Commercial Matters, T.1.A.S. 7444, 23 25 || U.S.T. 2555, reprinted in 28 U.S.C. § 1781 (‘Hague Convention”), which is in force between the 26 || United States and Australia. Fed. R. Civ. P. 28(b); see also AUSTRALIAN GOV’T, ATTORNEY- 27 || GENERAL’S DEP’T, Taking evidence in Australia for Foreign Court Proceedings, 28
1 | https://www.ag.gov.au/international-relations/publications/taking-evidence-australia-foreign- 2 || court-proceedings (last visited July 26, 2022). 3 A Letter of Request is what the Hague Convention refers to as a traditional “letter rogatory.” 4 || Crypto Asset Fund, LLC vy. Opskins Grp. Inc., No. 19-cv-06983, 2020 WL 4557059, at *1 (C.D. 5 || Cal. Jan. 14, 2020) (“A deposition may be taken in a foreign country under a letter of request, 6 || sometimes called a ‘letter rogatory’’’). “A letter rogatory is a formal written request sent by a court 7 || to a foreign court asking that the testimony of a witness residing within that foreign court’s 8 || jurisdiction be taken pursuant to the direction of that foreign court and transmitted to the requesting 9 || court for use in a pending action.” Crocs, Inc. v. La Modish Boutique, No. 21-cv-5641, 2021 WL 10 || 5933147, at *2 (C.D. Cal. Nov. 12, 2021). “A letter rogatory can also include requests for the 11 || production of documents.” /d. (citing Asis Internet Servs. v. Optin Glob., Inc., No. 05-cv-05124, 12 || 2007 WL 1880369, at *3 (N.D. Cal. June 29, 2007) and United States v. Reagan, 453 F.2d 165, 43 | 168 (6th Cir, 1971). i i 14 District courts have the inherent authority to issue a letter rogatory. Jd. (citing United States 15 || v. Staples, 256 F.2d 290, 292 (9th Cir. 1958)). The court should not weigh the evidence sought 16 || from the request or predict whether evidence will actually be obtained. 17 | TIL. Argument 18 Talon respectfully requests that the Court issue the Letters of Request to Richard Shelton, 19 || Scott Vile, Allen Vaughan, Amy Francis Chapman, and Castech Solutions Pty Ltd. See Burns 20 || Decl., [J 2-6, Exs. 1-5 (copies of the Letters of Request). As explained supra, all but one of these 21 || third parties was listed in Wearforce’s Rule 26(a) initial disclosures and each has valuable 22 || information relevant to Talon’s claims and/or defenses. These individuals are not subject to this 23 || Court’s jurisdiction—they are in Australia and are not parties to the case—so Talon’s only means 24 || for obtaining information from these individuals is through the Hague Convention. Without the 25 || Letters of Request, Talon would otherwise be unable to obtain information vital to its claims and/or 26 || defenses. Wearforce does not oppose this Motion. Id. 4 10, Ex. 9. 27 28
1 || IV. Conclusion 2 For the foregoing reasons, Talon respectfully requests the court issue the Letters of Request 3 || to Richard Shelton, Scott Vile, Allen Vaughan, Amy Francis Chapman, and Castech Solutions Pty 4 || Ltd. 5 DATED: July 29, 2022 /s/ Michael L. Burns 6 Matthew D. Francis (NV Bar No. 6978) 7 BROWNSTEIN HYATT FARBER SCHRECK, LLP 8 5520 Kietzke Lane, Suite 110 Reno, NV 89511 9 Tel: (775) 324-4100 Fax: (775) 333-8171 10 Email: mfrancis @bhfs.com 11 Matthew Satchwell (Pro Hac Vice) Illinois Bar No. 6290672 12 Michael L. Burns (Pro Hac Vice) a Pennsylvania Bar No. 204365 13 Peter F. Nelson (Pro Hac Vice) Texas Bar No. 24123832 14 DLA PIPER LLP (US) 444 West Lake St, Ste 900 15 Chicago, IL 60606 Tel: (312) 368-2111 16 Fax: (312) 236-7516 Email: matthew.satchwell @us.dlapiper.com 17 michael.burns @us.dlapiper.com peter.nelson @dlapiper.com 18 Attorneys for Defendant 19 Talon Engineering SDN BHD 20 21 IT IS SO ORDERED. 22 DATED: August 1, 2022. 23 ( 24 UNITED STATES MAGI ATE JUDGE 25 26 27 28